Case 2:23-cv-01997-MCA-JSA Document 114 Filed 12/04/23 Page 1 of 8 PageID: 3638
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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`MONIB ZIRVI, M.D., Ph. D.
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`Plaintiff,
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`v.
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`Civil Action No.
`2:23-cv-01997-MCA-JSA
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`Filed Electronically
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`ILLUMINA, INC., THERMO FISHER
`SCIENTIFIC, AKIN GUMP
`STRAUSS HAUER & FELD LLP,
`LATHAM & WATKINS, RIP FINST,
`SEAN BOYLE, MATTHEW A.
`PEARSON, ANGELA
`VERRECCHIO, ROGER CHIN, and
`DOUGLAS LUMISH,
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`Defendants.
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`PLAINTIFF’S
`MONIB ZIRVI, M.D., Ph. D.
`SUR-REPLY
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`Case 2:23-cv-01997-MCA-JSA Document 114 Filed 12/04/23 Page 2 of 8 PageID: 3639
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`Contents
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`I. MORGAN’S RULE BARS THE APPLICATION OF RES JUDICATA ............ 3
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`II. CLAIMS FOR CORRECTION OF INVENTORSHIP HAVE NO STATUTE
`OF LIMITATIONS..................................................................................................... 4
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`III. THE REBUTTABLE PRESUMPTION REGARDING CLAIMS FOR
`CORRECTION OF INVENTORSHIP DOES NOT BAR COUNT I ....................... 5
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`IV. THE STATUTE OF LIMITATIONS FOR FRAUD BASED CLAIMS DO
`NOT RUN UNTIL PLAINTIFF DISCOVERS FRAUD; SUFFERS ACTUAL
`DAMAGES; AND ALL TOLLING IS ACCOUNTED FOR .................................... 5
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`V. CONCLUSION .................................................................................................... 7
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`CERTIFICATE OF SERVICE ................................................................................... 8
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`Cases
`English v. Fed. Nat'l Mortg. Ass'n, Civil Action No. 13-2028(CCC), at *9-10
`(D.N.J. Nov. 26, 2013) ............................................................................................ 6
`Holmin v. TRW, Inc., 330 N.J. Super. 30, 36 (N.J. Super. Ct. App. Div. 2000) ......... 6
`Hor v. Chu, No. 2011-1540 (Fed. Cir. 2012) ............................................................. 4
`Lozano v. Montoya Alvarez, 572 U.S. 1, 10 (2014) ................................................... 7
`Maertin v. Armstrong World Indus., Inc., 241 F. Supp. 2d 434, 458 (D.N.J. 2002) .. 6
`Meng v Chu, No. 2019-1794 (Fed. Cir. 2020) ........................................................... 4
`Menominee Indian Tribe v. United States, 136 S.Ct. 750, 755 (2016) ...................... 7
`Morgan v. Covington Twp., 648 F.3d 172, 177 (3d Cir. 2011) .................................. 3
`Nichino Am., Inc. v. Valent U.S.A., LLC, 44 F.4th 180, 184-85 (3d Cir. 2022) ......... 5
`United States v. Kwai Fun Wong, 135 S. Ct. 1625, 1631 (2015) ............................... 7
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`Statutes
`35 U.S.C. § 256 .......................................................................................................... 4
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`Rules
`Fed. R. Evid. 301 ........................................................................................................ 5
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`Case 2:23-cv-01997-MCA-JSA Document 114 Filed 12/04/23 Page 3 of 8 PageID: 3640
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`I. MORGAN’S RULE BARS THE APPLICATION OF RES JUDICATA
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`The 3rd Circuit “…adopted a bright-line rule that res judicata does not apply
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`to events post-dating the filing of the initial complaint.” Morgan v. Covington Twp.,
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`648 F.3d 172, 177 (3d Cir. 2011). This doctrine for res judicata establishes that a
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`claim cannot be precluded by a previous action if the claimant did not have the
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`necessary information to assert the claim at the time of the original action. This
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`principle becomes particularly salient in the context of Dr. Zirvi's litigation.
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`After the SDNY case was filed (August 3, 2018), the parties to the Cornell
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`Litigation entered into a settlement agreement from which Dr. Zirvi received a
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`January 2019 royalty payment. In January 2021, Illumina finally capitulated to Dr.
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`Zirvi’s FOIA requests and for the first time provides a less redacted copy of the
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`U54HG002753 grant revealing the words “decode” or “decoding”1 23 times, which
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`had been improperly completely redacted.
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`On February 1, 2021, Amy McCourt, Director in the Intellectual Property &
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`Commercial Litigation group for Illumina, Inc. (“Illumina”), filed an affidavit in the
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`Zirvi v. NIH FOIA case, which argued to withhold the entire settlement agreement,
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`based on it containing sensitive business, licensing, and sublicensing agreements
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`affecting Dr. Zirvi’s royalties and rights, which were unknown to Dr. Zirvi at the
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`1 “Decode” or “decoding” as used in the grant, is a veiled reference to the Zirvi-
`Barany ZipCode technology.
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`Case 2:23-cv-01997-MCA-JSA Document 114 Filed 12/04/23 Page 4 of 8 PageID: 3641
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`time of the SDNY case. These events introduced new facts that were not available
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`to Dr. Zirvi during that litigation. Under the Morgan doctrine, these post-filing
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`developments bar the use of res judicata as an affirmative defense. In sharp contrast,
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`Illumina has released a fully unredacted copy of its licensing agreement with Tufts
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`University, where there were no concerns about confidentiality. (See
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`Tufts-Illumina licensing agreement Appendix 3 on Page 292 in Parsons’ Thesis in
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`the Duke Repository). In fact, it is Illumina’s and ThermoFisher’s continued
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`obstruction that has forced Dr. Zirvi to file this second litigation.
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`II.
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`CLAIMS FOR CORRECTION OF INVENTORSHIP HAVE NO
`STATUTE OF LIMITATIONS
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`The Federal Circuit in Meng v Chu, No. 2019-1794 (Fed. Cir. 2020) and Hor v. Chu,
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`No. 2011-1540 (Fed. Cir. 2012), highlighted the fact that correction of inventorship
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`claims under 35 U.S.C. § 256 have no statute of limitations. There is a presumption
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`of laches that occurs six years after patents have issued, but that is rebuttable under
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`the doctrine of “unclean hands” or other equitable concerns, which allow a Court, at
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`its discretion, to correct inventorship in the interest of Justice. The duplicitous
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`behavior of Thermo Fisher, Illumina, and Defendant Attorneys (as described in the
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`civil conspiracy count in this case) in and of itself should overcome any use of a
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`presumption. Moreover, Dr. Zirvi has never had discovery or an adjudication of the
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`claims in this lawsuit on their merits.
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`Case 2:23-cv-01997-MCA-JSA Document 114 Filed 12/04/23 Page 5 of 8 PageID: 3642
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`III. THE REBUTTABLE PRESUMPTION REGARDING CLAIMS FOR
`CORRECTION OF INVENTORSHIP DOES NOT BAR COUNT I
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`“[I]n all civil cases, absent specific statutory language to the contrary, ‘the
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`party against whom a presumption is directed has the burden of producing evidence
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`to rebut the presumption.’ Fed. R. Evid. 301. That allocation ‘does not shift the
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`burden of persuasion, which remains on the party who had it originally.’ Id.” Nichino
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`Am., Inc. v. Valent U.S.A., LLC, 44 F.4th 180, 184-85 (3d Cir. 2022).
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`The Plaintiff only needs to provide a small quantum of evidence to rebut a
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`presumption. Id. at 185 n.10. (“That small quantum of evidence is all we have
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`required to rebut Rule 301 presumptions…. a borrower's own testimony that her
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`lender had not properly explained the right to cancel her home mortgage was enough
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`to rebut the Truth in Lending Act's presumption…. such meager evidence as ‘a
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`single, non-conclusory affidavit ... based on personal knowledge’ is enough ‘even if
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`the affidavit is ‘self-serving.’’) (internal Citations omitted). Dr. Zirvi's allegations of
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`litigation misconduct is enough to overcome the rebuttable presumption, including
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`his allegations that he was advised by counsel to seek a trade secret claim against
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`Illumina and not to be added as an inventor on Illumina patents.
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`IV. THE STATUTE OF LIMITATIONS FOR FRAUD BASED CLAIMS DO
`NOT RUN UNTIL PLAINTIFF DISCOVERS FRAUD; SUFFERS
`ACTUAL DAMAGES; AND ALL TOLLING IS ACCOUNTED FOR
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`The Statute of Limitations regarding the Civil Conspiracy claim did not begin
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`to run until Dr. Zirvi received far less than he was entitled to receive under the
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`Second Settlement Agreement. English v. Fed. Nat'l Mortg. Ass'n, Civil Action No.
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`13-2028(CCC), at *9-10 (D.N.J. Nov. 26, 2013) (“’New Jersey law is clear that a
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`plaintiff does not have a cause of action for fraud against a defendant until the
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`plaintiff actually suffers damages because actual damages are an element of the
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`cause of action for fraud.’ Maertin v. Armstrong World Indus., Inc., 241 F. Supp. 2d
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`434, 458 (D.N.J. 2002); Holmin v. TRW, Inc., 330 N.J. Super. 30, 36 (N.J. Super. Ct.
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`App. Div. 2000). A cause of action does not accrue until ‘damage is inflicted.’
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`Holmin, 330 N.J. Super, at 35-36.”).
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`In the rules for discovery, undiscoverable fraud delays the start of the
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`limitations period whether that period began with an event or with the accrual of a
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`cause of action. This is a general background principle that applies to all statutes of
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`limitations, so that fraudsters could not use their own frauds to defeat lawsuits filed
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`by their victims. As explained in Buswell, Statute of Limitations, p. 548, “the
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`defendant is not to be permitted to avail himself of his own fraud by successfully
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`setting up the statute [of] limitation[s] to defeat the plaintiff’s claim.” Illumina and
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`ThermoFisher should not be permitted to benefit from their fraud. In this case, Dr.
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`Zirvi would also be entitled to equitable tolling. “[A] litigant is entitled to equitable
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`tolling of a statute of limitations only if the litigant establishes two elements: (1) that
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`he has been pursuing his rights diligently, and (2) that some extraordinary
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`circumstance stood in his way and prevented timely filing.” Menominee Indian Tribe
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`v. United States, 136 S.Ct. 750, 755 (2016) (citation and internal quotation marks
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`omitted); see also United States v. Kwai Fun Wong, 135 S. Ct. 1625, 1631 (2015);
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`Lozano v. Montoya Alvarez, 572 U.S. 1, 10 (2014).
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`V. CONCLUSION
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`Dr. Zirvi's filings in this litigation are neither frivolous nor harassing in nature.
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`They are based on a good faith belief that he has been unjustly harmed. Any delay
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`in bringing these claims was caused by collusion of the Defendants. It is
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`unprecedented for opposing parties to secretly work together undermining rights of
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`third parties and the judicial system. Dr. Zirvi’s litigation, regardless of the
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`Defendants snide characterizations of it being a “time-worn cudgel”, is actually a
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`response to “time-worn fraud” and concealed information that continues to this day,
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`necessitating thorough judicial examination. In summary, the Illumina’s and
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`ThermoFisher’s lack of transparency and candor throughout this litigation cast doubt
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`on their motivations and actions, positioning their request for sanctions as self-
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`serving, aimed at covering up their own questionable actions and malfeasances
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`rather than addressing frivolous litigation.
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`Case 2:23-cv-01997-MCA-JSA Document 114 Filed 12/04/23 Page 8 of 8 PageID: 3645
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the forgoing was filed and
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`service through the Court’s ECF filing system on all parties of record on this 4th
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`December 2023.
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`Respectfully submitted,
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`LORIUM LAW
`Attorneys for Plaintiff, Dr. Monib Zirvi
`101 N.E. 3rd Avenue, Suite 1800
`Fort Lauderdale, Florida 33301
`Telephone: (954) 462-8000
`Facsimile: (954) 462-4300
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`By: /s/ Joseph D. Garrity
` JOSEPH D. GARRITY
` Florida Bar No. 87531
` jgarrity@loriumlaw.com
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